in the high court of malaya at kuala...

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IN THE HIGH COURT OF MALAYA AT KUALA LUMPUR

(COMMERCIAL DIVISION)

SUIT NO: WA-22IP-20-05/2016

BETWEEN

CHANEL (Registration No. 542052766) … PLAINTIFF

AND

1. MELWANI2 INTERNATIONAL SDN BHD (Company No. 880894-T) 2. LACHMANDAS ISHWARLAL MELWANI (Passport No. Z1808358) 3. ANG CHONG LENG (NRIC No. 840514-10-5515) … DEFENDANTS

(Heard together with)



SUIT NO: WA-22IP-21-05/2016

BETWEEN

BURBERRY LIMITED (Registration No. 00162636) … PLAINTIFF

AND


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SUIT NO: WA-22IP-22-05/2016

BETWEEN

LOUIS VUITTON MALLETIER (Registration No. 318571064) … PLAINTIFF

AND





SUIT NO: WA-22IP-23-05/2016

BETWEEN

GUCCIO GUCCI S.P.A. (Registration No. 03031300159) … PLAINTIFF

AND


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JUDGMENT

(4 summary judgment applications)

A. Introduction

1. This judgment discusses a novel question of whether an individual may be

personally liable for a company’s infringement of a registered trade mark

under s 38(1)(a) of the Trade Marks Act 1976 (TMA).

B. Background

2. In these 4 suits (4 Suits) –

(1) the plaintiff companies (Plaintiffs) are proprietors of registered trade

marks for various goods in Classes 3, 9, 14, 18, 24, 25 and 35

(Plaintiffs’ Registered Trade Marks);

(2) the first defendant company (1st Defendant) is a company

incorporated under the Companies Act 1965 [CA (1965)];

(3) the second defendant (2nd Defendant) is an Indian national who is a

director and owner of 78% shares in 1st Defendant; and

(4) the third defendant (3rd Defendant) is an individual who is a director

and owner of 17% shares in 1st Defendant.

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3. The 1st Defendant is not a distributor or retailer authorized by Plaintiffs to

sell goods bearing Plaintiffs’ Registered Trade Marks. However, 1st

Defendant sold goods bearing Plaintiffs’ Registered Trade Marks

(Infringing Goods) at 1st Defendant’s business premises at Regency

Suite, 30th Floor, Pacific Regency Hotel Suites, Jalan Punchak, off Jalan

Ramlee 50250 Kuala Lumpur (1st Defendant’s Premises).

4. Plaintiffs’ representatives had gone to 1st Defendant’s Premises and

purchased Infringing Goods on 27.4.2012, 23.11.2013, 29.3.2014,

14.6.2014, 7.9.2014 and 25.12.2014. Consequently, officers of the Ministry

of Domestic Trade, Co-operatives and Consumerism (Ministry) raided 1st

Defendant’s Premises on 22.7.2012, 16.8.2014, 20.9.2014 and 25.12.2014

and seized items of Infringing Goods (Ministry’s Raids).

5. The 4 Suits have been filed by Plaintiffs against 1st to 3rd Defendants

(Defendants) based on infringement of Plaintiffs’ Registered Trade Marks

under s 38(1)(a) TMA.

6. In the 4 Suits –

(1) Plaintiffs had served the writ and statement of claim of 4 Suits (4

SOC’s) on 1st and 2nd Defendants by way of substituted service. 1st

and 2nd Defendants however did not enter appearance;

(2) 3rd Defendant had entered appearance and had filed a defence;

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(3) Plaintiffs initially filed 4 applications for summary judgment against 3rd

Defendant (4 SJ Applications). Subsequently, Plaintiffs obtained

leave of Court to amend 4 SJ Applications to apply for summary

judgment against all the Defendants (4 Amended SJ Applications);

(4) after Plaintiffs had obtained leave of this Court to amend 4 SJ

Applications, 3rd Defendant filed 4 applications for security for costs

against Plaintiffs (4 SFC Applications);

(5) the Plaintiffs and 3rd Defendant consented to the following –

(a) 4 SFC Applications to be heard together before 4 Amended SJ

Applications; and

(b) 4 Amended SJ Applications to be heard together after the

disposal of 4 SFC Applications; and

(6) this Court dismissed 4 SFC Applications with costs on the ground that

those applications had not been made in good faith but were instead

filed with a collateral purpose to stifle 4 Amended SJ Applications

(Dismissal of 4 SFC Applications). No appeal to Court of Appeal has

been filed by 3rd Defendant against the Dismissal of 4 SFC

Applications.

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C. Relevant principles in deciding summary judgment application

7. The following trite principles apply in deciding 4 Amended SJ Applications:

(1) once Plaintiffs have fulfilled the following 3 matters in O 14 rr 1(1) and

2(1) of Rules of Court 2012 (RC), namely -

(a) 4 SOC’s have been served on Defendants;

(b) Defendants have entered appearance; and

(c) deponents of Plaintiffs have affirmed affidavits verifying the facts

on which 4 SOC’s are based and the belief of Plaintiff’s

deponents that there is no defence by Defendants to 4 SOC’s

- the burden then shifts to Defendants to resist 4 Amended SJ

Applications by satisfying this Court under O 14 rr 3(1) and 4(1)

RC that there is “an issue or question in dispute which ought to be

tried”. This is clear from the following 2 Federal Court cases -

(i) please see George Seah FJ’s (as he then was) judgment in

National Company for Foreign Trade v Kayu Raya Sdn

Bhd [1984] 1 CLJ (Rep) 283, at 285; and

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(ii) the judgment of Steve Shim CJ (Sabah & Sarawak) in

Cempaka Finance Bhd v Ho Lai Ying & Anor [2006] 3 CLJ

544, at 551-552; and

(2) even if Defendants cannot raise any triable issue, 4 Amended SJ

Applications should still be dismissed under O 14 r 3(1) RC if “there

ought for some other reason to be a trial”, namely there are

circumstances that ought to be investigated by the Court – please see

Federal Court’s judgment delivered by Mohd. Dzaiddin FCJ (as he

then was) in United Merchant Finance Bhd v Majlis Agama Islam

Negeri Johor [1999] 1 MLJ 657, at 666-668.

D. Judgment in default of defence should be entered against 1st and 2nd

Defendants

8. As 1st and 2nd Defendants did not enter appearance in the 4 Suits,

summary judgment cannot be made against them – please see O 14 r 1(1)

RC. Having said that, this Court is not inclined to dismiss 4 Amended SJ

Applications against 1st and 2nd Defendants. This is due to the following

reasons:

(1) 4 SOC’s claimed for, among others, injunction and inquiry of damages.

In view of the relief claimed by Plaintiffs, O 13 r 6(1) RC (not O 13 rr 1

to 5 RC) applies to 4 Suits. O 13 r 6(1) RC provides as follows -

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“Where a writ is endorsed with a claim of a description not

mentioned in rules 1 to 4, then, if any defendant fails to enter an

appearance, the plaintiff may, after the time limited for appearing

and upon filing an affidavit proving due service of the writ on that

defendant and, where the statement of claim was not endorsed on

or served with the writ, upon serving a statement of claim on him,

proceed with the action as if that defendant had entered an

appearance.”

(emphasis added).

By reason of O 13 r 6(1) RC, Plaintiffs could proceed with 4 Suits

against 1st and 2nd Defendants as if 1st and 2nd Defendants had

entered appearance;

(2) O 19 r 7(1) and (3) RC state as follows -

“O 19 r 7(1) Where the plaintiff makes against a defendant or

defendants a claim of a description not mentioned in rules 2 to 5,

then, if the defendant or all the defendants (where there is more

than one) fails or fail to serve a defence on the plaintiff, the plaintiff

may, after the expiration of the period fixed under these Rules for

service of the defence, apply to the Court for judgment, and on the

hearing of the application the Court shall give such judgment as

the plaintiff appears entitled to on his statement of claim.

…

r 7(3) An application under paragraph (1) shall be by

notice of application.”

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(emphasis added).

I am of the following view –

(a) due to the relief prayed for in 4 SOC’s, O 19 rr 2 to 6 RC do not

apply to 4 Suits;

(b) Prayer 7 of 4 Amended SJ Applications had prayed for further and

other relief as the Court thinks fit (Prayer 7). I am of the view that

Prayer 7 constitutes an application within the meaning of O 19 r

7(3) RC. The following appellate cases have held that the Court

may resort to Prayer 7 and grant any appropriate remedy as is

just:

(i) Salleh Abas FJ’s (as he then was) judgment in Federal Court

case of Lim Eng Kay v Jaafar Mohamed Said [1982] CLJ

(Rep) 190, at 198;

(ii) the decision of Gopal Sri Ram JCA (as he then was) in the

Court of Appeal in Tan Tek Seng @ Tan Chee Meng v

Suruhanjaya Perkhidmatan Pendidikan & Anor [1996] 2

CLJ 771, at 814-815; and

(iii) Zainun Ali JCA’s (as she then was) majority judgment in the

Court of Appeal in Pentadbir Tanah Daerah Pontian & Ors

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v Ossons Ventures Sdn Bhd [2009] 6 CLJ 713, at 723-724;

and

(c) O 19 r 7(1) of the Rules of the High Court 1980 (RHC) is identical

with O 19 r 7(1) RC. As such, previous cases which have entered

judgment in default of defence pursuant to O 19 r 7(1) RHC, can

be applied in the construction of O 19 r 7(1) RC. In the following

High Court cases, judgments in default of defence have been

entered under O19 r 7(1) RC –

(i) Steve Shim J’s (as he then was) decision in Microsoft Corp

v PC House (Imbi) Sdn Bhd [1998] 6 MLJ 402, at 403-404;

(ii) the judgment of Suriyadi J (as he then was) in Nik Mohd

Yusof bin Nik Ismail (suing on behalf of Persatuan

Pemilik dan Penduduk Serendah Golf Resort) v Majlis

Daerah Hulu Selangor [2005] 4 MLJ 338, at paragraphs 16

and 17;

(iii) Abdul Malik Ishak J’s (as he then was) judgment in

Muthammah a/p Govindan v Masri bin Mohamed & Anor

[2000] 5 MLJ 518, at 523-524; and

(iv) the decision of Tengku Maimun J (as she then was) in Ferco

Seating Systems (M) Sdn Bhd v The Product People Pty

Ltd [2009] 6 MLJ 874, at paragraphs 8 and 9;

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(3) despite the use of the mandatory term “shall” in O 19 r 7(1) RC, the

following cases have held that the Court has a discretion to enter

judgment in default of defence - Microsoft Corp and Muthammah.

Accordingly, the Court has a discretion to enter a judgment in default

of defence against 1st and 2nd Defendants and if the Court so

exercises its discretion to record a judgment in default of defence

against 1st and 2nd Defendants, the Court has a further discretion to

award whatever relief which the Court thinks is fit and just; and

(4) I exercise my discretion under O 19 r 7(1) RC –

(a) not to grant a mandatory injunction to compel 1st and 2nd

Defendants to -

(i) deliver Infringing Goods to Plaintiffs’ solicitors within 7 days

from the date of judgment in default of defence;

(ii) deliver all documents and records regarding Infringing Goods

to Plaintiffs’ solicitors within 7 days from the date of judgment

in default of defence;

(iii) affirm, file and serve an affidavit on Plaintiffs’ solicitors which

verifies the execution of the above delivery orders;

(iv) disclose information within 7 days from the date of judgment

in default of defence regarding the suppliers, customers and

details of supply and offer of Infringing Goods; and

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(v) affirm, file and serve an affidavit on Plaintiffs’ solicitors which

verifies the disclosure of the above information; and

(b) to grant the following orders -

(i) a perpetual injunction to restrain 1st and 2nd Defendants from

infringing Plaintiffs’ Registered Trade Marks;

(ii) an inquiry to be held by learned Registrar (Inquiry) to assess

damages for the infringement of Plaintiffs’ Registered Trade

Marks (Assessed Damages);

(iii) 1st and 2nd Defendants shall pay Assessed Damages to

Plaintiffs;

(iv) 1st and 2nd Defendants shall pay to Plaintiffs interest at the

rate of 5% per annum on the Assessed Damages from the

date of judgment in default of defence until the date of full

payment of Assessed Damages;

(v) costs of Inquiry shall be determined by learned Registrar and

shall be paid by 1st and 2nd Defendants to Plaintiffs;

(vi) costs of RM5,000.00 for each of 4 Suits shall be paid by 1st

and 2nd Defendants to Plaintiffs; and

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(vii) an allocatur fee shall be imposed on all the above costs in

accordance with Order 59 rule 7(4) RC.

E. Whether Plaintiffs can obtain summary judgment against 3rd

Defendant

E(1). Contention of parties

9. The Plaintiffs advanced the following submission, among others, in support

of 4 Amended SJ Applications against 3rd Defendant:

(1) 1st Defendant had infringed Plaintiffs’ Registered Trade Marks under s

38(1)(a) TMA (1st Defendant’s Infringement);

(2) 3rd Defendant was liable for 1st Defendant’s Infringement because –

(a) 3rd Defendant being a director and shareholder of 1st Defendant,

together with 2nd Defendant, had caused 1st Defendant’s

Infringement as part of a common and concerted design among

1st, 2nd and 3rd Defendants;

(b) 3rd Defendant together with 2nd Defendant had procured,

authorized, induced and assisted in the 1st Defendant’s

Infringement;

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(c) 3rd Defendant had actively marketed and promoted Infringing

Goods;

(d) 3rd Defendant was aware of 1st Defendant’s Infringement and

continued to be a director of 1st Defendant;

(e) 3rd Defendant had personally paid fines imposed by Shah Alam

Sessions Court on 1st Defendant (please see below); and

(f) 3rd Defendant is the directing mind and will of 1st Defendant; and

(3) Plaintiffs rely on, among others, the following Singapore High Court

cases –

(a) Belinda Ang Saw Ean J’s judgment in Creative Techonology Ltd

v Cosmos Trade-Nology Pte Ltd & Anor [2003] 3 SLR (R) 697;

and

(b) Yong Pung How CJ’s decision in Trade Facilities Pte Ltd & Ors

v Public Prosecutor [1995] 2 SLR (R) 7.

10. The 3rd Defendant resisted 4 Amended SJ Applications on the following

grounds, among others:

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(1) 4 Amended SJ Applications are based on fraud. O 14 r 1(2)(b) RC

does not allow summary judgment to be given in a suit which is based

on an allegation of fraud; and

(2) additionally or alternatively, 4 Amended SJ Applications should be

dismissed as there are issues to be tried in this case as follows –

(a) whether 3rd Defendant was involved in the daily management of

1st Defendant;

(b) whether 1st Defendant’s Infringement was committed by 2nd

Defendant alone or with the help of 3rd Defendant;

(c) whether documents regarding Infringing Goods [applied for in

prayer 2(b) of 4 Amended SJ Applications] are in 3rd Defendant’s

possession;

(d) whether the offence under s 8 of the Trade Descriptions Act 2011

(TDA) with which 1st Defendant was charged by the Public

Prosecutor (PP), could be attributed to 3rd Defendant;

(e) whether 3rd Defendant was liable for 1st Defendant’s Infringement

merely on the fact that 3rd Defendant was a director of 1st Plaintiff;

and

(f) whether the principle of Salomon v Salomon would exclude 3rd

Defendant’s liability for 1st Defendant’s Infringement.

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E(2). Elements of trade mark infringement under s 38(1)(a) TMA

11. The relevant part of s 38(1)(a) TMA is reproduced below:

“38. Infringement of a trade mark

(1) A registered trade mark is infringed by a person who, not being the

registered proprietor of the trade mark or registered user of the

trade mark using by way of permitted use, uses a mark which is

identical with it or so nearly resembling it as is likely to deceive or

cause confusion in the course of trade in relation to goods or

services in respect of which the trade mark is registered in such a

manner as to render the use of the mark likely to be taken either -

(a) as being use as a trade mark; …”

(emphasis added).

12. In the High Court case of Leo Pharmaceutical Products Ltd AS (Lovens

Kemiske Fabrk Produktionsaktieselskab) v Kotra Pharma (M) Sdn Bhd

(No 2) [2012] 10 CLJ 507, at paragraphs 83 and 84, Low Hop Bing J (as he

then was) explained the 5 elements of trade mark infringement under s

38(1)(a) TMA (5 Elements) as follows:

“[83] The law regulating the infringement of a trade mark is enacted in s.

38(1) which reads:

…

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[84] In order to succeed in this cause of action, it is incumbent upon

the plaintiff to prove that:

(a) the defendant is neither the registered proprietor nor the

registered user of the trade mark;

(b) the defendant used a mark identical with or so nearly

resembling the plaintiff’s registered trade mark as is likely to

deceive or cause confusion;

(c) the defendant was using the offending mark in the course of

trade;

(d) the defendant was using the offending mark in relation to

goods or service within the scope of the registration; and

(e) the defendant used the offending mark in such a manner as

to render the use likely to be taken either as being used as a

trade mark or as importing a reference to the registered

proprietor or the registered user or to their goods or services.

(See Fabrique Ebel Societe Anonyme v. Sykt Perniagaan Tukang

Jam City Port & Ors [1989] 1 CLJ 919; [1989] 1 CLJ (Rep) 537, 540 &

541 per Zakaria Yatim J (later FCJ) and applied by the same judge in A

Clouet & Co Pte Ltd v. Maya Toba Sdn Bhd [1996] 1 BLJ 239).”

(emphasis added).

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13. I am satisfied that the 5 Elements of 1st Defendant’s Infringement have

been proven by the following undisputed affidavit evidence adduced by

Plaintiffs in 4 Amended SJ Applications:

(1) 1st Defendant is neither the registered proprietor nor the registered

user of Plaintiffs’ Registered Trade Marks;

(2) 1st Defendant had used marks (Offending Marks) identical with or so

nearly resembling Plaintiffs’ Registered Trade Marks as was likely to

deceive or cause confusion;

(3) 1st Defendant had used Offending Marks in the course of trade;

(4) 1st Defendant had used Offending Marks in relation to goods within the

scope of registration of Plaintiffs’ Registered Trade Marks; and

(5) 1st Defendant had used Offending Marks in such a manner as to

render that use likely to be used as a trade mark.

14. The defence, affidavits and written submission of 3rd Defendant did not

dispute the commission of 1st Defendant’s Infringement.

15. The following High Court cases have granted summary judgment for trade

mark infringement under s 38(1) TMA:

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(1) Zakaria Yatim J’s (as he then was) decision in Fabrique Ebel Societe

Anonyme v Syarikat Perniagaan Tukang Jam City Port & Ors

[1988] 1 MLJ 188, at 193; and

(2) the judgment of Ramly Ali J (as he then was) in –

(a) Acushnet Company v Metro Golf Manufacturing Sdn Bhd

[2006] 7 CLJ 557, at paragraph 102; and

(b) Abercrombie & Fitch Co & Anor v Fashion Factory Outlet KL

Sdn Bhd & Ors [2008] 7 CLJ 413, at paragraph 86.

E(3). Whether Court should pierce 1st Defendant’s corporate veil

16. I am of the following view regarding the piercing or lifting of a company’s

corporate veil:

(1) a company is a legal person which is separate from its directors,

shareholders and employees (please see the present s 20(a) of the

Companies Act 2016). Accordingly, the general rule is that a

company’s directors, shareholders and employees should not be

personally liable for the company’s act or omission;

(2) the Court should only pierce or lift a company’s corporate veil in

exceptional circumstances provided by –

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(a) statute (Statutory Exception). An example of Statutory

Exception is the Court of Appeal’s judgment delivered by Abdul

Malik Ishak JCA in Mackt Logistics (M) Sdn Bhd v Malaysian

Airlines System Bhd [2014] 5 CLJ 851, at 865; and

(b) case law (Case Law Exception);

(3) there is a difference between the piercing of a corporate veil and its

lifting. A company’s corporate veil is pierced by a party when the party

seeks to impose personal liability on an individual who may or may not

be the company’s director, shareholder or employee. The Court lifts

the corporate veil of a company to ascertain the true factual position

without imposing any personal liability on a particular individual [please

see Staughton LJ’s judgment in the English Court of Appeal case of

Atlas Maritime Co SA v Avalon Maritime Ltd (The Coral Rose) (No.

1) [1991] 4 All ER 769, at 779, which was followed in KTL Sdn Bhd &

Anor v Leong Oow Lai & other cases [2014] AMEJ 1458, at

paragraphs 66 and 67];

(4) piercing or lifting a company’s corporate veil is not a cause of action in

itself – please see Nallini Pathmanathan J’s (as she then was)

judgment in the High Court case of Deepak Jaikishan a/l Jaikishhan

Rewachand & Anor v Intrared Sdn Bhd (previously known as

Reetaj City Centre Sdn Bhd and formerly known as KFH Reetaj

Sdn Bhd) & Anor [2013] 7 MLJ 437, at 458;

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(5) piercing or lifting a corporate veil is also not a remedy in itself. Having

said that, there is nothing in law to prohibit a party from applying to

Court for a declaration that an individual is the controller, alter ego or

“directing mind and will” of a company;

(6) to pierce or lift a corporate veil, 3 recent Federal Court judgments

require 2 conditions to be fulfilled cumulatively (2 Conditions), namely

–

(a) the piercing or lifting of a corporate veil is in the interest of justice

(1st Condition); and

(b) there exists special circumstances to pierce or lift the corporate

veil (2nd Condition), such as -

(i) there has been commission of actual fraud or Common Law

fraud;

(ii) equitable fraud or constructive fraud has been committed;

(iii) to prevent evasion of liability; or

(iv) to prevent an abuse of corporate personality.

I rely on the following 3 Federal Court judgments which have laid down

the 2 Conditions –

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(aa) Hasan Lah FCJ’s judgment in Solid Investment Ltd v Alcatel

Lucent (M) Sdn Bhd [2014] 3 CLJ 73, at 92;

(bb) the decision of Richard Malanjum CJ (Sabah & Sarawak) in

Gurbachan Singh s/o Bagawan Singh & Ors v Vellasamy

s/o Pennusamy & Ors [2015] 1 MLJ 773, at paragraphs 96-99;

and

(cc) the judgment of Richard Malanjum CJ (Sabah & Sarawak) in

Giga Engineering & Construction Sdn Bhd v Yip Chee

Seng & Sons Sdn Bhd & Anor [2015] 9 CLJ 537, at

paragraphs 39, 44 and 45;

(7) in respect of the 2nd Condition –

(a) the categories of special circumstances to pierce or lift the

corporate veil, are not closed; and

(b) the 2nd Condition is laid down by case law and should not be

applied in an inflexible manner as if the 2nd Condition is a strict

mandatory statutory requirement; and

(8) whether the Court should exercise its discretion to pierce or lift the

corporate veil is a question of fact dependent upon the particular

circumstances of the case in question. As such, decided cases on this

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matter are not binding precedents from the view point of the stare

decisis doctrine.

17. The 4 Suits and 4 Amended SJ Applications sought to pierce 1st

Defendant’s corporate veil so as to impose personal liability on 3rd

Defendant for 1st Defendant’s Infringement.

18. Plaintiffs had adduced affidavit evidence which affirmed the following:

(1) in respect of Infringing Goods, PP had instituted criminal proceedings

against, among others, 1st Defendant, in the Shah Alam Sessions

Court for offences under s 8 of the Trade Descriptions Act 2011

(Criminal Charges);

(2) 1st Defendant had pleaded guilty to Criminal Charges and was fined a

total of RM318,000.00 (RM318,000 Fine); and

(3) RM318,000 Fine had been personally paid by 3rd Defendant

19. The Plaintiffs’ sworn averment in their affidavits that 3rd Defendant had

personally paid RM318,000 Fine, had not been denied by 3rd Defendant in

his affidavit in opposition to 4 Amended SJ Applications. It is trite law that

any factual averment in a party’s affidavit which has not been denied by the

opposing party by way of affidavit, is deemed to be admitted by the

opposing party – please see the Federal Court’s judgment delivered by

Chong Siew Fai CJ (Sabah & Sarawak) in Sunrise Sdn Bhd v First

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Profile (M) Sdn Bhd & Anor [1996] 3 MLJ 533, at 541. Consequently, 3rd

Defendant is deemed to have accepted Plaintiffs’ allegation that 3rd

Defendant has personally paid RM318,000 Fine.

20. I am of the view that the 2 Conditions for the application of Case Law

Exception, have been fulfilled in the 4 Amended SJ Applications. This

decision is based on the following evidence and reasons:

(1) the 1st Condition is satisfied (the piercing of 1st Defendant’s corporate

veil is in the interest of justice) as follows -

(a) 3rd Defendant was under no obligation whatsoever to pay

RM318,000 Fine for 1st Defendant and yet, the 3rd Defendant did

so. It is inconceivable for any reasonable individual to pay a hefty

fine imposed on a company if that individual is not the controller,

alter ego and the “directing mind and will” of the company;

(b) the defence and affidavit of 3rd Defendant in all 4 Suits, claimed to

have resigned as a director of 1st Defendant “at the end of 2014”.

Such an allegation cannot be accepted for the following reasons -

(i) if 3rd Defendant had indeed resigned as a director of 1st

Defendant, there would be no reason for 3rd Defendant to

have personally paid RM318,000 Fine for 1st Defendant;

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(ii) Plaintiffs’ affidavits have exhibited a search dated 28.4.2016

from the records of Companies Commission of Malaysia

(SSM) which showed that 3rd Defendant is still a director of 1st

Defendant (SSM’s Record). No documentary evidence had

been adduced by 3rd Defendant to show that SSM’s Record

was erroneous and 3rd Defendant was no longer 1st

Defendant’s director; and

(iii) 3rd Defendant had not adduced any documentary evidence

regarding his alleged resignation as 1st Defendant’s director;

and

(c) according to SSM’s Record, 3rd Defendant owns 170,000 paid-up

shares (of nominal value of RM1 for each share) in 1st Defendant.

Hence, 3rd Defendant is not a complete stranger to 1st Defendant.

On the contrary, 3rd Defendant has a substantial financial interest

in 1st Defendant. There is no evidence that 1st Defendant has any

other business save for selling Infringing Goods. Accordingly, 3rd

Defendant could not claim ignorance of 1st Defendant’s

Infringement when he had invested substantially in 1st Defendant

which only sold Infringing Goods; and

(2) the 2nd Condition is fulfilled in 4 Suits because there exists the

following special circumstances to pierce 1st Defendant’s corporate veil

–

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(a) 3rd Defendant should not evade statutory liability for trade mark

infringement under s 38(1)(a) TMA owed to Plaintiffs; and/or

(d) 1st Defendant’s corporate personality should not be abused by 3rd

Defendant.

21. Additionally or alternatively –

(1) 3rd Defendant has the legal onus to raise a triable issue so as to resist

successfully 4 Amended SJ Applications [please see the above sub-

paragraph 7(1)]. Based on the evidence and reasons as elaborated in

the above paragraph 20, I am not satisfied that 3rd Defendant has

successfully discharged the legal burden to raise an issue which

should be tried in the 4 Suits; and

(2) there is no “other reason for trial” in the 4 Suits as there is no

circumstance which ought to be investigated in these cases, especially

in light of 3rd Defendant’s payment of RM318,000 Fine for 1st

Defendant.

22. I am constrained to reject the following contentions advanced by 3rd

Defendant’s learned counsel:

(1) the 4 Suits and 4 Amended SJ Applications are not based on fraud but

are premised on trade mark infringement under s 38(1)(a) TMA; and

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(2) 3rd Defendant can be the controller, alter ego and the “directing mind

and will” of 1st Defendant so as to be personally responsible for 1st

Defendant’s Infringement without –

(a) being involved in the daily management of 1st Defendant;

(b) having possession of documents regarding Infringing Goods; and

(c) being convicted for any offence under TMA and/or TDA in respect

of Infringing Goods. It is to be noted that the Criminal Charges are

separate from the 4 Suits.

F. Court’s decision

23. Premised on the above evidence and reasons, the following summary

judgment is granted against 3rd Defendant (Summary Judgment):

(1) a perpetual injunction to restrain 3rd Defendant from infringing

Plaintiffs’ Registered Trade Marks;

(2) a perpetual mandatory injunction to compel 3rd Defendant to -

(a) deliver Infringing Goods to Plaintiffs’ solicitors within 7 days from

the date of Summary Judgment; and

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(b) deliver all documents and records regarding Infringing Goods to

Plaintiffs’ solicitors within 7 days from the date of Summary

Judgment;

(c) affirm, file and serve an affidavit on Plaintiffs’ solicitors which

verifies the execution of the above delivery orders;

(d) disclose information within 7 days from the date of Summary

Judgment regarding the suppliers, customers and details of

supply and offer of Infringing Goods; and

(e) affirm, file and serve an affidavit on Plaintiffs’ solicitors which

verifies the disclosure of the above information;

(3) Inquiry to be held by learned Registrar to ascertain Assessed

Damages;

(4) an order that 3rd Defendant shall pay Assessed Damages to Plaintiffs;

(5) an order that 3rd Defendant shall pay to Plaintiffs interest at the rate of

5% per annum on Assessed Damages from the date of Summary

Judgment until the date of full payment of Assessed Damages;

(6) costs of Inquiry shall be determined by learned Registrar and shall be

paid by 3rd Defendant to Plaintiffs;

29

(7) costs of RM8,000.00 for each of 4 Amended SJ Applications shall be

paid by 3rd Defendant to Plaintiffs; and

(8) an allocatur fee shall be imposed on all the above costs in accordance

with Order 59 rule 7(4) RC.

WONG KIAN KHEONG Judicial Commissioner

High Court (Commercial Division) Kuala Lumpur

DATE: 28 FEBRUARY 2017

Counsel for Plaintiff: Mr. Jasdev Singh Gill, Ms. Geraldine Shamini &

Mr. Sukumar s/o Karuppiah (Messrs Jasdev Chambers)

Counsel for 3rd Defendant: Mr. Loo Chay Meng & Puan Siti Fariza binti Faris

(Messrs Abu Hassan & Associates)

in the high court of malaya at kuala...

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